All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Monday, December 13, 2010

Takeaway: In Ex parte Blau, the Applicant relied on the door in the claimed animal trap being "integral" to distinguish over the reference. The Applicant also stated, in responding to a written description rejection, that all drawings show a door of "integral construction." The Board found that the door in the reference "has an integral door as much as the present invention does" even though it had a separately manufactured lure housing, because one of the Applicant's drawings showed a similar construction. Thus, the construction of "integral" specifically argued by the Applicant read on the reference.

1. A humane animal trap comprising:
an elongated plastic enclosure
having at one end a rectangular opening for permitting entry by an
animal; and
an integral one-way door
hinged to a top of said opening ...

Applicant added the term "integral" to the claim in response to the first Office Action. The Examiner then issued a prior art rejection with a different reference, along with a § 112 written description rejection. In response to the written description rejection, the Applicant argued that “[t]hroughout the description of the invention, in the application as filed, and in all of the drawings, only doors of integral construction are shown or described.” The Examiner maintained the written description and obviousness rejections, and the Applicant appealed.

The Board reversed the written description rejection. The Board first noted that the specification did not use the word "integral." However, "Figures 1-3 of the drawings illustrate doors that consist of or are composed of parts that together constitute a whole." The Board said this finding was bolstered by this statement in the specification: "Referring first to FIGS. 1-3 there is illustrated an animal trap of the enclosure type, consisting of only two discrete parts, including ...a one-way metal or hard plastic door 12."

The Board then analyzed the obviousness rejection. The Applicant argued that the door in the reference "is not of integral construction, in that
it is made up of a door panel 30, and lure housing 38 that is detachably mounted on the door panel, and a lure 40 placed within the housing." (Fig. 3 of the reference is shown below.)

The Board did not agree that the reference (Stahl) described a detachable lure housing, but did find that Stahl described "a separately manufactured element (the lure housing 38) mounted on the rear surface of the door." Despite the presence of a separately manufactured lure housing 38, the Board nonetheless found that Stahl had an integral door under the meaning argued by the Applicant.

Explaining its reasoning, the Board stated that the Applicant's specification described the doors of Fig. 4 and Fig. 5 as "separately manufactured." (Fig. 4 of the specification is shown below.)

Yet the Applicant's Appeal Brief argued that the (separately manufactured) doors illustrated in Figs. 4 and 5 were "integral." Therefore, despite the presence of a separately manufactured lure housing 38, the Board found that “Stahl has an integral door as much as the present invention does."

Despite finding that the claimed integral door read on the door in the reference, the Board ended up reversing the obviousness rejection because another claimed element was missing from the combination.

My two cents: Be careful what you ask for. The Applicant convinced the Board that the spec and drawsings supported "integral" – but in doing so admitted that "integral" covered "separately manufactured."

Since the door in Applicant's Fig. 4 looks an awful lot like the door in the reference, maybe the Applicant should have stayed away from Fig. 4 in arguing written description. Using Fig. 3 wouldn't have been so harmful, since it does not look to be of two piece construction like Fig. 4, nor did the spec describe the door in Fig. 3 as "separately manufactured." It looks to me like Fig. 3 showed possession of an integral door embodiment, which should be enough to overcome the written description rejection.

It seems to me that the Applicant could have used Fig. 3 as support for an integral door and still argued that the door in the reference was not integral. Instead, by arguing that all embodiments showed doors of integral construction, the Applicant walked himself into an admission that the reference showed an integral door.

I love these kinds of situations. I regularly make sure that they appear and delight in the execution of actions taken in the furtherence thereof.

"It seems to me that the Applicant could have used Fig. 3 as support for an integral door and still argued that the door in the reference was not integral. "

Obviously. But these are lawlyers we're talking about. They'll make a harmful admission or assertion in a heartbeat. All you have to do is put some forethought into the initial actions and set them up for it.

I will probably arouse the wrath of curious, but even though the rejections were reversed, this was another example of poor advocacy. The amended to include "integral" and then made arguments about the feature, when they had the perfectly good argument that the combintion of references would not have provided air holes to the trapped animal. That argument won the day for them. The "integral" arguments were just garbage estoppel dumped on the client's patent. So sad.

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